Ex Parte 7000325 et al

Board of Patent Appeals and Interferences

Oct 31, 2011

95001130 (B.P.A.I. Oct. 31, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,130 02/12/2009 7000325 36446-80536 3469
26294 7590 10/31/2011
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
WEHNER, CARY ELLEN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
10/31/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Bunzl Processor Distribution LLC,
Requester and Appellant,

v.

Patent of Bettcher Industries, Inc.,
Patent Owner and Respondent
____________

Appeal 2011-007091
Reexamination Control 95/001,130
Patent 7,000,325 B2
Technology Center 3900
____________

Before RICHARD E. SCHAFER, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2011-007091
Reexamination Control 95/001,130
Patent 7,000,325 B2

2

Third-Party Requester Bunzl Processor Distribution LLC
(“Requester”) requests rehearing under 37 C.F.R. § 41.79 of our decision
mailed July 28, 2011 (hereinafter “Decision”), in which we affirmed the
Examiner’s refusal to reject claims 1-13 of United States Patent 7,000,325
B2 (hereinafter the “‘325 Patent”) on various grounds. (Request for
Rehearing filed August 26, 2011, hereinafter “Request,” at 1.) Patent Owner
Bettcher Industries, Inc. (“Patent Owner”) urges that the Request should be
denied. (Respondent/Patent Owner’s Comments in Opposition to Request
for Rehearing under 37 C.F.R. § 41.79(c), hereinafter “PO Response,” at 1.)
Requester contends that the Board misapprehended or overlooked:1
1. the teachings of Decker (U.S. Patent 4,854,046, issued August 8,
1989) (Request 2-3); and
2. the reasons offered by Requester in support of a conclusion of
obviousness (Request 4-6).
Decker
Requester argues that we misapprehended that one of ordinary skill in
the art would have appreciated that radial surface 91 of Decker is a bearing
surface. (Request 2-3.) We do not agree. As we stated in the Decision,
Decker does not disclose that surface 91 is a bearing surface. (Decision 10.)
Indeed, Decker discloses surface 91 as being “close to the housing lip,”

1 Requester’s assertion that our decision was somehow influenced by the
proceedings in the concurrent litigation is baseless and without merit.
(Request 2.) We simply noted that the ‘325 Patent was involved in
litigation. (Decision, 2-3; PO Response 2-3.) Thus, we will not further
address Requester’s comments in this regard.
Appeal 2011-007091
Reexamination Control 95/001,130
Patent 7,000,325 B2

3

which is contrary to the position that surface 91 contacts the housing lip.
(See Decision, FF 3.)2 The Requester did not provide persuasive evidence in
the appeal in support of the assertion that a person of ordinary skill in the art
would understand surface 91 to be a bearing surface in order to prevent axial
movement of the blade. To the contrary, the Declaration of Whited, which
is of record, indicates that the top wall 80 and the gear teeth 42 provide the
second bearing surface to prevent axial movement of the blade. (Decl.
Whited ¶ 6; see also PO Response at 3-4).
Regarding Requester’s reliance on the Background of the ‘325 Patent
as an admission that contact between the radial surface and housing was
known to occur in the rotary knife of Decker (Request 3), we agree with
Patent Owner that there is no indication that such contact was known in the
art as opposed to a problem identified through research of the inventor. (PO
Response 6.) Requester has identified no other persuasive evidence to
support the argument that one of ordinary skill in the art would have
recognized surface 91 as a bearing surface. Accordingly, we did not
misapprehend the teachings of Decker.

Obviousness
Initially, we disagree with Requester that we overlooked the
obviousness factors set forth in KSR Int’l v. Teleflex Inc., 550 U.S. 398

2 Requester’s argument that claims 7 and 8 of Decker provide support for the
position that surface 91 is a bearing surface (Request 3, FN 2) is a new
argument that is beyond the scope of rehearing. See 37 C.F.R. 41.79(b)(1).
In addition, Patent Owner has provided arguments that the claims discussed
by Requester are not inconsistent with Decker’s disclosure that surface 90 is
the only identified bearing surface. (PO Response 4, FN 4.)
Appeal 2011-007091
Reexamination Control 95/001,130
Patent 7,000,325 B2

4

(2007), and that we misapprehended the issue of whether the claim
limitations are disclosed by the prior art of record in relation to whether the
combination would have been obvious. (Request 7.) First, the Decision
quotes directly from KSR for the relevant principles of law dispositive to the
present appeal. (Decision, p. 8-9; see also PO Response 5.) In addition, we
acknowledged in the Decision the teachings of Decker, Nakanishi, Cooper,
and Lew. (Decision 9; FF 1-7.) Thus, we did not misapprehend or overlook
the factors set forth in KSR or the teachings of each individual prior art
reference.
Consistent with the principles set forth in KSR, we stated that
Requester’s proposed rejections lacked “adequate rational underpinning on
this record to support Requester’s position that that the invention claimed in
the '325 Patent is ‘merely a combination of the prior art annular blade
described in Decker and the prior art double frustoconical bearing race.’”
(Decision 9.) We then explained that the independent teaching of each of
the claimed elements is not sufficient basis from which to conclude the
claims would have been obvious without sufficient rational underpinning or
reasoning as to how the proposed combination meets the claims. (Decision
9-10; see also PO Response 6-7.)
We further explained that in the instant case, Requester had not
adequately explained how the teachings of the prior art references would be
combined in light of the absence in Decker’s disclosure that surface 91 is a
bearing surface and the statements made in the Declaration of William D.
Macy executed on June 25, 2009 that “‘Design constraints determine the
exact nature of bearing design.’” (Decision 10-11.) As we noted, Requester
Appeal 2011-007091
Reexamination Control 95/001,130
Patent 7,000,325 B2

5

has not made a sufficient showing of a defect in the specific bearing design
in Decker that would be addressed by applying the two point contact bearing
system of the prior art. (Decision 11.) Thus, contrary to Requester’s
arguments, it is unclear whether one of ordinary skill in the art would have
appreciated that the bearing systems disclosed in the secondary references
would improve the bearing system in Decker. (See Request 5-6.)
Accordingly, upon review of our decision, we did not overlook the
application of KSR to the proposed rejections of the claims.
Therefore, we decline to make any changes in the Decision mailed
July 28, 2011. Accordingly, the Request for Rehearing is denied.

DENIED

PATENT OWNER:
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114

THIRD-PARTY REQUESTER:
CLYDE L. SMITH
THOMPSON COBURN LLP
ONE BANK PLAZA
ST. LOUIS, MO 63101